Second Appeal Not Maintainable Under Trade Marks Act: Calcutta High Court Dismisses ‘DUNLOP’ Trademark Challenge
Sanchayita Lahkar
The Calcutta High Court, Division Bench of Justices Arijit Banerjee and Om Narayan Rai held that an intra-court appeal is not maintainable against a Single Judge’s decision rendered under the Trade Marks Act, 1999. In a matter concerning the registration of the mark “DUNLOP,” the Court determined that once a Single Judge has disposed of an appeal from an order of the Registrar of Trademarks, no further appeal can be pursued before a Division Bench. Referring to the restriction under Section 100A of the Civil Procedure Code, the Bench noted that the Registrar performs functions akin to those of a civil court and that the statutory bar precludes a second appellate remedy. The appeal was accordingly dismissed as not maintainable.
The matter arises from an appeal filed against an order dated 11 June 2025 passed by a Single Judge of the High Court at Calcutta. The Single Judge had set aside the Deputy Registrar of Trademarks’ order dated 4 July 2024, which had allowed the appellant’s application for registration of the mark “DUNLOP” after overruling objections raised by the opposing party. The Single Judge remanded the matter to the Registrar to reconsider the application after granting an opportunity of hearing to all concerned.
The respondent opposing the trademark registration filed its appeal before the High Court under Section 91 of the Trade Marks Act, 1999. In the present proceeding, the respondents contended that the instant intra-court appeal was barred as it amounted to a second appeal. They relied on Section 100A of the Code of Civil Procedure, asserting that no further appeal lies from a judgment of a Single Judge when deciding an appeal from an original order. The respondents also referred to Sections 18, 20, 21, 23, and 91 of the 1999 Act to describe the stages preceding the statutory appeal.
They further relied on the Intellectual Property Rights Division Rules, 2023, submitting that Rule 2(d) and Rule 2(o) prevented the filing of such a further appeal. Several judicial precedents, including Kamal Kumar Dutta, P.S. Sathappan, Vasanthi, and Avtar Narain Behal, were cited.
The appellant argued that the Registrar of Trademarks does not constitute a Civil Court and therefore Section 100A would not apply. It was also argued that Rule 2(o)(iii) and 2(o)(iv) of the IPD Rules allow an appeal from a Single Judge’s decision to the Division Bench. The appellant relied on the Delhi High Court decisions in Promoshirt SM SA and Resilient Innovations Pvt. Ltd.
The Court examined the statutory scheme, the powers of the Registrar under Section 127 of the 1999 Act, earlier precedents, and the legislative structure of the predecessor Act of 1958.
The Court recorded that the issue of maintainability of a Letters Patent Appeal in matters arising from a Registrar’s order “is not one of first impression” and referred to the judgment in National Sewing Thread Co. Ltd., noting that the earlier statute “merely provid[ed] for a right of appeal and saying ‘nothing more about it’.” The Bench stated that the earlier judgement would have settled the issue but for the subsequent insertion of Section 100A CPC, which required fresh scrutiny.
The Bench observed that the Delhi High Court had held Section 100A applies only to appeals from civil court decrees, quoting: “the intent of Section 100A would be confined to a second appeal when preferred against a judgment of a Single Judge… provided it pertained to a decree or order as defined by the Code.” However, the Court held it necessary to examine whether the Registrar possessed the trappings of a court because the Supreme Court in Kamal Kumar Dutta had extended Section 100A to orders of bodies having such trappings.
The Court reproduced and considered the Supreme Court’s explanation of “trappings of a court,” including the statement: “the pronouncement of a definitive judgment is thus considered the essential sine qua non of a court.” The Bench noted that Section 127 of the Trade Marks Act confers upon the Registrar “all the powers of a civil court for the purpose of receiving evidence, administering oaths, enforcing the attendance of witnesses…” and that orders as to costs are “executable as a decree of a civil court.”
The Court observed that the Registrar adjudicates disputes in a manner affecting legal rights: “The decision taken by the Registrar… directly impacts and determines the applicant’s legal rights and liabilities… This is an essential characteristic of a judicial function.” It held that these attributes constituted “trappings of a court,” making the principle in Kamal Kumar Dutta applicable.
The Bench further noted legislative intent, citing the omission of the second appellate remedy under the 1958 Act: “a similar provision was consciously avoided by the legislature… Should such omission be held to be without reasons?” It further stated that the earlier scheme, involving appeals to the IPAB with no further appeal, reflected a structure where “the pre-amendment 1999 Act also… did not encourage a second appeal.”
The Court recorded its disagreement with the Delhi High Court: “we therefore respectfully disagree with the view taken… in Promoshirt SM SA.” It distinguished Resilient Innovations on the ground that Section 57 proceedings were original, not appellate.
The Court concluded its order by stating: “For all the reasons aforesaid, we hold that the instant appeal is not maintainable.” It further directed: “TEMPAPO-IPD 5 of 2025 is, therefore, dismissed. The connected application being GA-COM 1 of 2025 also stands dismissed accordingly.”
Advocates Representing The Parties
For the Appellant: Mr. Jaydip Kar, Senior Advocate; Mr. Siddharth Dey, Advocate
For the Respondents: Mr. Debnath Ghosh, Senior Advocate; Mr. Biswaroop Mukherjee, Advocate; Ms. Mini Agarwal, Advocate; Mr. Siddhartha Lahiri, Advocate; Sk. Sariful Haque, Advocate
Case Title: Glorious Investment Limited v. Dunlop International Limited & Anr.
Case Number: TEMPAPO-IPD 5 of 2025
Bench: Justice Arijit Banerjee and Justice Om Narayan Rai
